What does an examiner consider when reviewing a patent owner’s response with amendments?
When a patent owner’s response contains amendments, the examiner must consider specific legal issues. According to the MPEP: “If the patent owner response contains an amendment, the examiner will consider the amendment to determine whether the amendment raises issues of 35 U.S.C. 112 and/or broadening of the claims under 35 U.S.C. 314.” This means the…
Read MoreCan a party participate in another party’s appeal in an inter partes reexamination?
Yes, in inter partes reexamination proceedings commenced on or after November 2, 2002, both the patent owner and the third party requester can participate in each other’s appeal to the Federal Circuit. According to MPEP 2683: “The patent owner and the third party requester may each be a party to, i.e., participate in, each other’s…
Read MoreWhat is the panel review conference in inter partes reexamination?
The panel review conference is a quality control measure in inter partes reexamination. According to MPEP 2660: “Upon receipt of a patent owner response to the action (and third party requester comments where permitted) by the CRU, or upon the expiration of the time to submit same, the examiner will be internally notified. The examiner…
Read MoreWhat are the page limit requirements for submissions in inter partes reexamination?
Inter partes reexamination submissions must adhere to page limit requirements set by 37 CFR 1.943. If a submission exceeds the limit, it is considered improper. According to MPEP 2667: “Where the length of the patent owner submission exceeds that permitted by 37 CFR 1.943, the submission is improper.” In such cases, the patent owner will…
Read MoreHow are issues outside the scope of reexamination handled in inter partes proceedings?
In inter partes reexamination proceedings, issues that fall outside the scope of reexamination are noted but not considered. According to MPEP 2671.01: “If questions not within the scope of reexamination proceedings (for example, questions of patentability based on public use or on sale, conduct issues, abandonment under 35 U.S.C. 102) have been newly raised by…
Read MoreHow can I request an oral hearing before the Board in an inter partes reexamination appeal?
To request an oral hearing before the Board in an inter partes reexamination appeal, you must follow specific procedures and timing requirements. According to MPEP 2662: If an appellant or a respondent (who has filed a respondent brief) desires an oral hearing by the Board, he or she must file a written request for an…
Read MoreCan the time for requesting an oral hearing be extended?
No, the time for requesting an oral hearing cannot be extended. MPEP 2680 clearly states: “The time for requesting an oral hearing may not be extended.” This means that the two-month deadline after the date of the examiner’s answer is strict and cannot be prolonged. To learn more: oral hearing deadline extension inter partes reexamination
Read MoreHow long is the oral argument in an inter partes reexamination appeal hearing?
The duration of oral arguments in an inter partes reexamination appeal hearing is typically limited to thirty minutes for each appellant or respondent who has requested an oral hearing, and twenty minutes for the primary examiner. However, this time allocation can be adjusted by order. According to MPEP 2680: “A hearing will be held as…
Read MoreWhat information is included in the Official Gazette notice for an inter partes reexamination certificate?
The Official Gazette notice for an inter partes reexamination certificate includes: Bibliographic information Status of each claim after the conclusion of the reexamination proceeding A representative claim Indication of any changes to the specification or drawing As stated in MPEP 2691: “The Official Gazette notice will include bibliographic information, and an indication of the status…
Read MoreWhat is the process for preparing an Office action in inter partes reexamination?
The process for preparing an Office action in inter partes reexamination involves several steps and considerations. According to MPEP 2671.01, the process includes: Notification of the examiner upon receipt of a patent owner response (and third party requester comments, if applicable). Preparation for and setting up of a panel review conference (as per MPEP §…
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